Societe Des Produits Nestle S.A & ... vs Shree Shankeshwar Utensils & ...
2018 Latest Caselaw 2108 Del

*     IN THE HIGH COURT OF DELHI AT NEW DELHI

%                                     Date of decision: 5th April, 2018.

+                        CS(COMM) 106/2018

      SOCIETE DES PRODUITS NESTLE S.A & ANR ..... Plaintiffs
                   Through: Mr. Manish Kr. Mishra and Ms.
                            Akansha Singh, Advs.

                                  Versus

    SHREE SHANKESHWAR UTENSILS &
    APPLIANCES PVT LTD                      ..... Defendant
                  Through: Mr. Amit Jain and Ms. Saltanat,
                           Advs.
CORAM:
HON'BLE MR. JUSTICE RAJIV SAHAI ENDLAW

IA No. 15670/2014 (of the plaintiffs under Section 124 of the Trade
Marks Act, 1999).

1.

The counsel for the plaintiffs/applicants and the counsel for the defendant have been heard.

2. The plaintiffs/applicants, claiming to be the registered proprietor of the trade mark „MAGGI‟, have instituted this suit to restrain the defendant from infringing the said mark by using the mark „MAGGI‟ in respect of pressure cookers.

3. The suit was entertained and vide ex parte ad interim order dated 3rd August, 2010, an interim injunction restraining the defendant from using the mark „MAGGI‟ was granted. This injunction is continuing though the counsels state that the same has not been confirmed.

4. The defendant, in its written statement disclosed that it had acquired the registered mark „MAGGISUN‟ from the earlier proprietor thereof and was using the mark „MAGGISUN‟ in relation to its pressure cookers.

5. The plaintiffs/applicants thereafter did not amend their plaint but filed a replication and on the pleadings, following issues were framed in the suit on 22nd August, 2012:-

"(i) Whether the plaint has not been properly signed, verified and instituted? OPD

(ii) Whether the plaintiff No.1 is the proprietor of the trademark „MAGGI‟? OPP

(iii) Whether the trademark „MAGGI‟ of the plaintiffs is a well known trademark? OPP

(iv) Whether the use of the trademark „MAGGI‟ by the defendant in respect of pressure cookers amounts to infringement of registered trademark „MAGGI‟ of the plaintiffs? OPP

(v) Whether the use of the trademark „MAGGI‟ by the defendant in respect of pressure cookers amounts to acts of passing off? OPP

(vi) Whether this Court has no territorial jurisdiction to entertain the present suit? OPD

(vii) Whether the defendant through its predecessor is using the trademark „MAGGI‟ since 1994 in respect of pressure cookers? OPD

(viii) Whether the defendant is a subsequent proprietor of registered trademark „MAGGISUN‟ under No.1163623 in class 21 and is entitled to use the registered trademark „MAGGISUN‟? OPD

(ix) Whether the suit of the plaintiff is barred by delay, acquiescence and laches? OPD

(x) Whether the plaintiffs are entitled to rendition of accounts of profits and damages in the alternative and if so, to what extent? OPP

(xi) To what relief, if any, are the plaintiffs entitled? No other issue arises or is claimed."

and vide order dated 26th February, 2014, the following was framed as an additional issue:-

"Whether the registration obtained for trade mark „MAGGISUN‟ by M/s Haryana Pressure Cookers Pvt. Ltd. bearing registration No.1163623 in class 21 is invalid and liable to be rectified? OPP"

6. It appears that the plaintiff No.1/applicant filed a Rectification Petition before the Intellectual Property Appellate Board (IPAB) for removal of the mark „MAGGISUN‟ and which Rectification Petition is pending consideration before the IPAB. The plaintiffs/applicants now seek stay of proceedings in the present suit under Section 124 of the Act.

7. The counsel for the defendant has opposed the application on two grounds. Firstly, it is contended that in terms of the language of Section 124 of the Act, the plaintiffs/applicants, after institution of the suit, could not have instituted the Rectification Petition before the IPAB without seeking permission of this Court and which was not sought and thus IPAB has no jurisdiction to entertain the Rectification Petition and since there is no validly constituted Rectification Petition before the IPAB, the question of

the proceedings in the present suit being stayed does not arise. The second contention is that the plaintiffs/applicants, after the defendant in its written statement disclosed acquisition of the registered trade mark „MAGGISUN‟ from Haryana Pressure Cookies Pvt. Ltd., and use thereof, did not amend their plaint to claim any relief qua the mark „MAGGISUN‟ and for which reason also the application under Section 124 is misconceived.

8. As far as the second of the aforesaid two contentions is concerned, after the additional issue aforesaid was framed on 26 th February, 2014, it is not open to the defendant to now contend that the suit is with respect to the mark „MAGGI‟ and not with respect to the mark „MAGGISUN‟. The said objection if available to the defendant, ought to have been taken by the defendant at the time when the plaintiff was seeking the framing of the additional issue aforesaid and the additional issue aforesaid having been framed, it is now not open to the defendant to contend that the suit is not with respect to „MAGGISUN‟.

9. I may however in this regard notice that while the counsel for the defendant states that the defendant till date continues to use the mark „MAGGISUN‟ and there is no interim injunction with respect thereto, the counsel for the plaintiffs/applicants states that the ex parte ad interim order dated 3rd August, 2010 injuncts the defendant from using „MAGGI‟ word mark or any other mark or label resembling the plaintiffs‟/applicants‟ registered trade mark „MAGGI‟ in relation to any of the products produced and marketed by the defendant and the same would encompass use by the defendant of „MAGGISUN‟ also.

10. I may also record that no application complaining violation of the interim order in the suit by the defendant by use of the mark „MAGGISUN‟ has been filed by the plaintiffs/applicants.

11. I may also record that the order dated 26th February, 2014 framing the additional issue records that the counsel for the defendant had opposed the framing of the additional issue "not on the ground that the proposed issue does not arise from the pleadings or is not relevant for adjudication of the matter in controversy", but firstly, on the ground of the plaintiffs notwithstanding framing of issues as far back as on 22 nd August, 2012, having delayed the filing of the affidavit by way of examination-in-chief and secondly, on the ground of the plaintiffs, without obtaining the permission of the Court, having approached IPAB as is being contended today.

12. In the order dated 26th February, 2014 it was held that the framing of issues is to be guided by Order XIV Rules 1&2 of the Code of Civil Procedure, 1908 (CPC) and once the issue had remained to be framed on the pleas raised in the pleadings and was material for adjudication, it was the duty of the Court to frame the said issue.

13. Thus, there is no merit in the second of the aforesaid two contentions of the counsel for the defendant.

14. As far as the first of the aforesaid two contentions of the counsel for the defendant is concerned, the counsel for the plaintiffs/applicants has drawn attention to Patel Field Marshal Agencies Vs. P.M. Diesels Ltd. 2017 SCC OnLine SC 1388 and particularly to paras 32 and 37 thereof which are as under:-

"32. The intention of the legislature is clear. All issues relating to and connected with the validity of registration has to be dealt with by the Tribunal and not by the civil court. In cases where the parties have not approached the civil court, Sections 46 and 56 provide an independent statutory right to an aggrieved party to seek rectification of a trade mark. However, in the event the Civil Court is approached, inter alia, raising the issue of invalidity of the trade mark such plea will be decided not by the civil court but by the Tribunal under the 1958 Act. The Tribunal will however come into seisin of the matter only if the Civil Court is satisfied that an issue with regard to invalidity ought to be framed in the suit. Once an issue to the said effect is framed, the matter will have to go to the Tribunal and the decision of the Tribunal will thereafter bind the Civil Court. If despite the order of the civil court the parties do not approach the Tribunal for rectification, the plea with regard to rectification will no longer survive."

"37. Section 111 of the 1958 Act and the corresponding Section 124 of the 1999 Act nowhere contemplates grant of permission by the civil court to move the High Court or the IPAB, as may be, for rectification. The true purport and effect of Sections 111/124 (of the old and new Act) has been dealt within detail and would not require any further discussion or enumeration. The requirement of satisfaction of the civil Court regarding the existence of a prima facie case of invalidity and the framing of an issue to that effect before the law operates to vest jurisdiction in the statutory authority to deal with the issue of invalidity by no means, tantamount to permission or leave of the civil court, as has been contended. It is a basic requirement to further the

cause of justice by elimination of false, frivolous and untenable claims of invalidity that may be raised in the suit."

and has contended that the Supreme Court has already held that there is no requirement in Section 124 of the Act for permission to be obtained of the Court before approaching the IPAB for rectification, even if a suit has been pending since prior thereto.

15. I have drawn attention of the counsels to my dicta in Abbott Healthcare Pvt. Ltd. Vs. Raj Kumar Prasad 2017 SCC OnLine Del 12372 and Abbott Healthcare Pvt. Ltd. Vs. Raj Kumar Prasad 2018 SCC OnLine Del 6657 in which also I have held to the same effect.

16. The application thus succeeds and is allowed.

17. The further proceedings in the present suit are adjourned sine die with liberty to the counsels to apply for revival after the disposal of the Rectification Petition aforesaid before the IPAB and/or as and when the need arises.

18. Interim orders to continue.

RAJIV SAHAI ENDLAW, J.

APRIL 05, 2018 „pp‟..